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Journal of Intellectual Property Law & Practice (2014) doi: 10.1093/jiplp/jpu103, first published online: June 17, 2014

The Court of Appeal has overturned the High Court's judgment that a registered Community design (RCD) was infringed by a copied child's ride-on suitcase and has refused permission to appeal to the Supreme Court.

Legal context

The Court of Appeal has held that Magmatic's registered Community design (RCD) for its well-known Trunki child's ride-on suitcase is not infringed by a competitor product sold as the Kiddee Case.

Magmatic sought permission to appeal to the Supreme Court. The Court of Appeal refused on the basis that the case does not ‘raise any point of general public importance’. Magmatic has sought permission from the Supreme Court.

Facts

In 1997, a designer created an original design for a child's ride-on suitcase. This design was developed and subsequently commercialized by Magmatic under the trade mark Trunki. The Trunki case proved highly successful: Magmatic estimated that in 2011 approximately 20 per cent of three-to-six-year-olds in the United Kingdom possessed Trunki luggage. The product is now sold in 97 countries.

PMS admitted that its Kiddee Case was inspired by the Trunki product. However, it claimed to have instructed its designer to come up with something different from anything else on the market. PMS began selling the Kiddee Case in late 2012. Magmatic commenced proceedings in February 2013. In July 2013, the High Court (Arnold J), in a ‘clear and concise judgment’, ruled that PMS infringed Magmatic's RCD, and UK unregistered design rights (UK UDR) in relation to the Trunki's clasps, internal straps, internal pouch and tow strap (PMS conceded copyright infringement in relation to a safety notice). PMS appealed only the issue of RCD infringement on two very narrow points: that the trial judge had wrongly interpreted the RCD and had improperly excluded from his consideration of infringement the decoration on the Kiddee Case.

Analysis

How should a tribunal interpret an RCD? The Court of Appeal emphasized that the scope of protection of an RCD is determined by the representation of the design. As Kitchin LJ held, ‘[a]t the end of the day, the scope of the design must be determined from the representation itself … the scope of the protection must be discerned from the graphical representation and the information it conveys.’ Some assistance is available from drafting conventions, such as dotted lines, he said. But colour, Kitchin LJ noted, ‘presents further challenges’.

To assist in interpreting the RCD in this case, Kitchin LJ reviewed two previous Court of Appeal RCD cases, where the interpretation of black and white line drawings was in issue.

In Procter & Gamble Company v Reckitt Benckiser (UK) Ltd [2007] EWCA Civ 936, the RCD was for an air freshener shown in a black-and-white line drawing: it was held to protect the shape of the design in any colour. In Samsung Electronics (UK) Ltd v Apple Inc [2012] EWCA Civ 1339, the RCD was again depicted in black-and-white line drawings. Apple had contended that a lack of ornamentation was a feature of its design: accordingly, any decoration on the Samsung tablet was held by the High Court and Court of Appeal to constitute a difference (and it was irrelevant that this ornamentation included a trade mark).

In the present case, Magmatic's RCD represented the design using monochrome 3D renders (which showed how light would play on the surface of the suitcase), perhaps more accurately described as ‘greyscale’. The shape was unadorned with any surface decoration, but the wheels and the strap were shown in a darker shade than the sides of the case.

The Court of Appeal held that the trial judge's first error was in his interpretation of the RCD, enumerated as follows. First, he failed to recognize that Magmatic's RCD looks like a horned animal (the Court of Appeal described this as ‘plainly one of its essential features’). Secondly, although the monochrome representations meant that the RCD protected the shape in any colours, the 3D renders indicated a ‘distinct contrast in colour’ between the wheels and strap on the one hand and, on the other, the rest of the suitcase. Accordingly, the Court of Appeal held that the wheels were ‘a rather striking aspect of the design as a whole’, which the trial judge had failed sufficiently to take into account.

The Court of Appeal identified the trial judge's second error in his comparison of the RCD with the Kiddee Case. Kitchin LJ held that it was ‘wrong for the judge to eliminate the decoration on the accused design from his consideration entirely because it significantly affects how the shape itself strikes the eye, and the overall impression it gives. At least in the case of this particular registered design, the global comparison necessarily requires account to be taken of the context in which the accused shape appears’. Kitchin LJ held that the Kiddee Case's ladybird and tiger versions were ‘plainly not’ horned animals and produced ‘very different’ overall impressions.

Having identified errors of principle, the Court of Appeal felt it was free to form its own view. Kitchin LJ concluded as follows: ‘[t]he impression created by the [RCD] is that of a horned animal. It is a sleek and stylised design and, from the side, has a generally symmetrical appearance with a significant cut away semicircle below the ridge. By contrast the design of the Kiddee Case is softer and more rounded and evocative of an insect with antennae or an animal with floppy ears. At both a general and a detailed level the Kiddee Case conveys a very different impression.’

Practical significance

The Court of Appeal has continued its unbroken anti-RCD run: never has it found an RCD to be infringed. Practitioners who hoped that recent personnel changes on the court may herald a less interventionist and more design-rights-friendly approach will be disappointed with this decision.

Did the trial judge commit an error of law? The first error listed by the Court of Appeal was that the trial judge ‘failed to appreciate that this is a design for a suitcase which, considered as a whole, looks like a horned animal’. First, he did no such thing; the trial judge observed that ‘the ridge and the horns form important parts of its appearance’ and noted ‘the nose and tail of an animal’ shown in the RCD. Both quotes come from paragraph 64 of the trial judgment, excerpted in full by the Court of Appeal in its decision. The Court of Appeal also excerpted the trial judge's conclusion (para 77 of the trial judgment): ‘the overall impression the Kiddee Case creates shares the … prominent ridge and horn-like handles and clasps looking like the nose and tail of an animal which are present in the [RCD]’. Indeed, at paragraph 8 of its decision, the Court of Appeal notes ‘[a]s the judge recognised, one of the striking features of the [RCD] is that the handles and the clasps give the suitcase the appearance of a horned animal’ (emphasis added). It is difficult to reconcile these findings. In any event, even if this ‘fail[ure] to appreciate’ was an error, it was not an error of law but merely a difference in emphasis.

Perhaps more worrying is the Court of Appeal's reference to the RCD being ‘clearly intended to create the impression of a horned animal’ (emphasis added). As the Court of Justice made clear in C 488/10 Celaya Emparanza y Galdos Internacional SA v Proyectos Integrales de Balizamientos SL [2012] E.C.D.R. 17, the intention of the designer is irrelevant to the interpretation of an RCD.

There is a further sub-point: the Court of Appeal felt that the trial judge underplayed the contrast in shade between the wheels and the rest of the body of the suitcase, and in this they may be correct. A greyscale 3D computer representation of the shape of a product is not to be construed in the same way as a black and white line drawing. For example, a black-and-white line drawing does not show features of ‘texture’ or ‘materials’ (Article 3(a) of the Community Design Regulation (CDR)), whereas these may be shown in a greyscale model. Also, and relevantly here, contrasting shades may be shown—for example, darker wheels against a lighter case. Kitchin LJ noted, ‘the wheels are, to my eye, a rather striking aspect of the design as a whole’. To be fair to the trial judge, at first instance PMS did not list the contrasting wheel shade among the differing features on which it relied. Further, as noted by the trial judge, ‘[i]n the case of the wheels, the real difference is that the wheels on the Kiddee Case have covers over them.’ So the informed user would not have paid much attention to the wheels in any event.

Overall, this appears to have been a difference in emphasis, rather than an error of law.

The second error of law identified by the Court of Appeal is the more important one, as it may have ramifications beyond this dispute. The Court of Appeal found that the trial judge, in comparing the RCD with the Kiddee Case, was wrong to disregard the surface decoration on the later product. Kitchin LJ noted, ‘[a]t least in the case of this particular registered design, the global comparison necessarily requires account to be taken of the context in which the accused shape appears.’ No authority is given for this statement, which reads dangerously like trade mark law. Indeed, the finding runs contrary to authority, including Procter & Gamble in the Court of Appeal, to compare like with like. A copyist ought not to avoid infringement by applying different markings to a product, particularly where the RCD protects shape only, devoid of decorative elements.

It is possible to look at this point another way. The CDR provides protection for ‘the appearance of the whole or a part of a product’. In filing an RCD devoid of surface decoration, Magmatic claimed protection for that ‘part’ of the product, and not the surface decoration ‘part’. In undertaking a like-with-like comparison, the trial judge was therefore right to avoid the surface decoration on the Kiddee Case. In other words, a greyscale RCD for a distinctive motor vehicle shape is still infringed by an identically shaped vehicle, even if the later vehicle is painted with zebra stripes.

In our view, the Court of Appeal was wrong to look at the ladybird and tiger markings: these should have been excluded from the comparison made by the informed user.

It is also of little assistance to practitioners that the Court of Appeal caveated its decision with ‘[a]t least in the case of this particular registered design’. Designers, practitioners and the design protection system benefit from clear tests (to the extent that is possible), and the Court of Appeal has here elucidated nothing that takes this particular design away from the usual ‘like-with-like’ comparison.

The Court of Appeal refused permission to appeal to the Supreme Court, noting briefly: ‘[w]e have reached a conclusion different from that of the judge as to the scope of the [RCD] and the issue of infringement. However, this finding is specific to the circumstances of the present case and we do not believe it raises any point of general public importance.’ It may thus be that this case will be confined to its facts, not being seen as signalling a move away from the established case law on comparing like with like.

In our view, the trial judge made neither error attributed to him, but had made an error. However, that finding did not influence his decision and therefore played no part in the appeal. The Rodeo, an earlier ride-on suitcase created by the Trunki designer, had been disclosed at an awards event in 1998. The trial judge found that that disclosure was not ‘obscure’—it could ‘reasonably have become known in the normal course of business to the circles specialised in the sector concerned, operating within the Community’. Although admitting that the Rodeo was therefore a prior design for novelty purposes, Magmatic argued that the Rodeo should not be included in the design corpus, because it would not have been a design with which the informed user was familiar. The trial judge agreed, finding support in the General Court's comment in Case T-9/07 Grupo Promer Mon Graphic SA v Office for Harmonization in the Internal Market (OHIM) [2010] E.C.D.R. 7 that the informed user ‘has some awareness of the state of the prior art’ (emphasis added), and the Court of Justice's comment on appeal in that case (Case C-281/10 P E.C.R. I-10153) that the informed user ‘possesses a certain degree of knowledge with regard to the features which those designs normally include’ (emphasis added).

In our submission, there is nothing in a purposive construction of the CDR, or indeed, in Grupo Promer, that supports such a contention. In order to assess the validity of an RCD, it is necessary to compare it against each prior design (Advocate General in Case C-345/13 Karen Millen Fashions Ltd v Dunnes Stores, Dunnes Stores (Limerick) Ltd 2 April 2014 (unreported)). If any one of those prior designs creates the same overall impression on the informed user as the RCD, that RCD is invalid. But it cannot be that an RCD that survives such an invalidity attack is then protected from the ‘kindred prior art’ that may be obscure-ish, but not obscure. For the invalidity test to be the flipside of the infringement test (Procter & Gamble Company v Reckitt Benckiser (UK) Ltd [2006] EWHC 3154 (Ch), para 26), the ‘design corpus’ must include all the ‘prior designs’. As a practical matter, the legislature cannot have intended that tribunals should have to apply an additional filter once a prior design is found not to be too obscure. As noted above, this did not affect the trial judge′s findings, because he considered the single prior design, despite not considering it part of the design corpus of which the informed user would be aware.

The Court of Appeal's decision is a timely reminder of the attention to be paid when filing for RCD protection. Many practitioners consider that a black line drawing on white paper gives the broadest scope of protection. Had Magmatic filed for the Trunki in that form, it would likely have survived an invalidity attack based on the Rodeo, as well as leading even the Court of Appeal to a finding of infringement.

It was undisputed that PMS took a version of the Trunki suitcase, and Arnold J found that it had been copied. Modifications were made, but Arnold J found that they were not enough to avoid infringement. The Court of Appeal has disagreed, in a decision that will not please designers, originators or practitioners.

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